Ex parte Bogert et al.

Board of Patent Appeals and Interferences

Oct 23, 2000

08605212 (B.P.A.I. Oct. 23, 2000)

Claims 7, 13, 14, 16, 17 and 24 were amended subsequent1
to the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HERMANN BOGERT and GERHARD GEISEL
____________
Appeal No. 1999-0272
Application No. 08/605,212
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 7, 8, 10, 12, 14, 16, 17, 18, 22, 24 and
25. Claims 9, 11, 13, 15, 19, 20, 21 and 23 have been
objected to as depending from a non-allowed claim. Claims 1
to 6 have been canceled. 1
Appeal No. 1999-0272 Page 2
Application No. 08/605,212
In determining the teachings of Gurevich, we will rely2
on the translation provided by the USPTO. A copy of the
translation is attached for the appellants' convenience.
We AFFIRM-IN-PART.
BACKGROUND
The appellants' invention relates to an apparatus for the
severing of glass gobs from one or more strands of molten
glass (claims 7, 8, 10, 12 and 14); an apparatus for severing
glass gobs from at least one strand of molten glass (claims
16, 17, 18 and 22); and an apparatus for moving at least one
pair of cooperating shear blades to sever glass gobs from at
least one strand of molten glass (claims 24 and 25). A copy
of the claims under appeal is set forth in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ward, Jr. (Ward) 4,015,967 April 5,
1977
Gurevich et al. (Gurevich) SU 1435548 Nov. 7, 19882
Appeal No. 1999-0272 Page 3
Application No. 08/605,212
Claims 8, 10, 12 and 14 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claims 7, 8, 16, 17, 18, 22, 24 and 25 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Ward or
Gurevich.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 26,
mailed July 7, 1998) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 25,
filed May 29, 1998) and reply brief (Paper No. 27, filed
September 11, 1998) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
Appeal No. 1999-0272 Page 4
Application No. 08/605,212
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
We will not sustain the rejection of claims 8, 10, 12 and
14 under 35 U.S.C. § 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Claim 8 reads as follows:
Apparatus according to claim 7 wherein each said
drive means is formed as an electric servodrive with a
driven crank, and a coupling rod is coupled between a
crank pin of each driven crank and the associated shear
arm at a distance from the longitudinal axis of the
column.
Appeal No. 1999-0272 Page 5
Application No. 08/605,212
The examiner believes (answer, p. 3) that claim 8 is
indefinite since "each" in line 4 should be changed to --the--
as only one coupling rod is being referred to rather than all
the rods.
The appellants argue (brief, pp. 5-6; reply brief, pp. 1-
3) that the term "each" in line 4 is appropriate, where as the
term "the" would be inappropriate. Furthermore, the
appellants assert that claim 8 cannot be rejected because the
examiner prefers different phraseology. We agree. After
reviewing claim 8, it is our opinion that it defines the metes
and bounds thereof with a reasonable degree of precision and
particularity. In that regard, we note that the examiner has
not even alleged that the scope of claim 8 cannot be
determined from the language of the claims with a reasonable
degree of certainty. Thus, the rejection of claims 8, 10, 12
and 14 under 35 U.S.C. § 112, second paragraph, is
inappropriate.
The obviousness rejection
Claims 7, 16 and 17
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Application No. 08/605,212
In accordance with 37 CFR § 1.192(c)(7), we have selected
claim 16 as the representative claim from the appellants'
grouping of claims 7, 16 and 17 to decide the appeal on the
rejection under 35 U.S.C. § 103. See page 4 of the
appellants' brief.
Claim 16 recites an apparatus for severing glass gobs
from at least one strand of molten glass, comprising, inter
alia, a first shear blade arranged on a first shear arm; a
second shear blade arranged on a second shear arm; a common
column on which the first and second shear arms are coaxially
and pivotally mounted to be pivotally moveable about the
column; and "a separate powered drive coupled to each said
shear arm to pivotally move said first and second shear arms
in synchronism with each other to sever the glass gobs."
Ward discloses an apparatus for shearing an elongated gob
of glass from the end of a vertically flowing stream of molten
glass and tilting the severed gob from its vertical
orientation toward a horizontal orientation. As shown in
Figure 3, Ward's apparatus includes an upper blade 22 carried
Appeal No. 1999-0272 Page 7
Application No. 08/605,212
A copy of this patent is attached for the appellants'3
convenience.
and moved by an upper shear arm 32; a lower blade 24 carried
and moved by a lower shear arm 34; the upper and lower shear
arms 32 and 34 are both rotatably mounted upon a common freely
rotating shaft 38 which serves as a pivot for the arms 32 and
34; a gear box 36; crank arms 40 and 42; gears 56 and 58;
pivot pins 44 and 52; link arms 46 and 50; and pivot pins 48
and 54. Ward teaches (column 4, lines 7-11) that "[i]t is
quite evident in the mechanical drive shown that rotation of
the crank arms 40 and 42 will drive the link arms 46 and 50
which in turn will force the upper and lower shear arms 32 and
34 toward the centerline 26." Ward also teaches (column 3,
lines 42-54) that the drive shown in Figure 3 use the
mechanism of U.S. Patent No. 3,736,826. From Figure 3 and3
U.S. Patent No. 3,736,826 it is clear that Ward teaches that
gears 56 and 58 are driven by a single motor.
Gurevich discloses a shear for the cutting of batches of
glass mass. As shown in Figures 1 and 2, Gurevich's shear
includes a first knife 7 arranged on upper lever 6; a second
Appeal No. 1999-0272 Page 8
Application No. 08/605,212
knife 10 arranged on lower lever 9; a holder 1 on which the
upper and lower levers are coaxially and pivotally mounted;
connecting rods 24 and 25; cranks 26 and 27; gearwheels 29;
and a hydraulic motor 30 connected to one of the gearwheels 29
to impart rotation motion thereto.
The examiner determined (answer, pp. 4-6) that both Ward
and Gurevich clearly teach all the claimed limitations of
claim 16 except for the limitation "a separate powered drive
coupled to each said shear arm to pivotally move said first
and second shear arms in synchronism with each other to sever
the glass gobs." With respect to this limitation the examiner
set forth two alternative approaches. The first approach
being that it would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to replace the single drive motor of Ward or Gurevich with
two drive motors so as to provide for individual control of
each shear arm in view of a lack of any unexpected results or
criticalities. The second approach being that the claimed
limitation was met by Ward's gears 56 and 58 and Gurevich's
cranks 26 and 27 driven by gearwheels 29.
Appeal No. 1999-0272 Page 9
Application No. 08/605,212
The appellants argue (brief, pp. 7-8; reply brief, pp. 3-
5 and 6-7) that the above-noted limitation of claim 16 is not
taught or suggested by the teachings of either Ward or
Gurevich. We do not agree since it is our opinion that the
above-noted limitation of claim 16 is taught by Ward and
Gurevich for the reasons that follow.
The "separate powered drive coupled to each said shear
arm" as recited in claim 16 is not recited in means-plus-
function format. Accordingly, it is appropriate to apply the
broadest reasonable meaning to the word "drive" as in its
ordinary usage as it would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment
by way of definitions or otherwise that may be afforded by the
written description contained in the appellants'
specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997). See also In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Moreover,
limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184, 26
Appeal No. 1999-0272 Page 10
Application No. 08/605,212
USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The American Heritage Dictionary, Second College Edition,
(1982) defines "drive" as "[t]he means or apparatus for
transmitting motion or power to a machine or from one machine
part to another." It is our view that this definition is the
broadest reasonable meaning of "drive" as it would be
understood by one of ordinary skill in the art without
importing limitations from the specification since the written
description contained in the appellants' specification does
not provide any other definition for "drive."
Ward's gears 56 and 58 and Gurevich's cranks 26 and 27
driven by gearwheels 29 do transmit motion or power from one
machine part to another. Thus, it is our conclusion that the
above-noted "separate powered drive" limitation claim 16 is
readable on Ward's gears 56 and 58 and Gurevich's cranks 26
and 27 driven by gearwheels 29. Accordingly, we conclude that
the claimed subject matter is taught by Ward and Gurevich.
Appeal No. 1999-0272 Page 11
Application No. 08/605,212
For the reasons set forth above, the decision of the
examiner to reject claim 16 under 35 U.S.C. § 103 is affirmed.
In accordance with 37 CFR § 1.192(c)(7), claims 7 and 17 fall
with claim 16. Thus, it follows that the decision of the
examiner to reject claims 7 and 17 under 35 U.S.C. § 103 is
also affirmed.
Claims 8, 18, 22, 24 and 25
We will not sustain the rejection of claims 8, 18, 22, 24
and 25 under 35 U.S.C. § 103.
With respect to claims 8, 18 and 24, we agree with the
appellants' argument (brief, pp. 8-9; reply brief, p. 5) that
two electric servodrives as recited in these claims are not
suggested or taught by the applied prior art. In that regard,
while an artisan may have found it obvious to have replaced
either Ward's motor or Gurevich's motor with an electric
Appeal No. 1999-0272 Page 12
Application No. 08/605,212
Evidence of a suggestion, teaching, or motivation to4
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
servodrive, we see no evidence as to why an artisan would4
have replaced a single motor with two motors.
With respect to claims 22 and 25, we agree with the
appellants' argument (brief, pp. 9-11; reply brief, p. 6) that
the common carriage as recited in these claims is not
suggested or taught by the applied prior art. In that regard,
the American Heritage Dictionary, Second College Edition,
Appeal No. 1999-0272 Page 13
Application No. 08/605,212
(1982) defines "carriage" as "[a] moving part of a machine for
holding or shifting another part." Ward's gear box 36 is not
a carriage since it is not a moving part of a machine for
holding or shifting another part. Likewise, Gurevich's
support within which his cranks 26 and 27 are located is not a
carriage since it is not a moving part of a machine for
holding or shifting another part.
For the reasons set forth above, the decision of the
examiner to reject claims 8, 18, 22, 24 and 25 under 35 U.S.C.
§ 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 8, 10, 12 and 14 under 35 U.S.C. § 112, second
paragraph, is reversed; the decision of the examiner to reject
claims 7, 16 and 17 under 35 U.S.C. § 103 is affirmed; and the
decision of the examiner to reject claims 8, 18, 22, 24 and 25
under 35 U.S.C.
§ 103 is reversed.
Appeal No. 1999-0272 Page 14
Application No. 08/605,212
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0272 Page 15
Application No. 08/605,212
GARY A. HECHT
SYNNESTVEDT AND LECHNER
2600 ARAMARK TOWER
1101 MARKET STREET
PHILADELPHIA, PA 19107-2950
Appeal No. 1999-0272 Page 16
Application No. 08/605,212
JVN/dl